Appeal decision
The appellants were Real Estate
Marketing Australia Pty Ltd (REMA)
and its sole director, James
Hardingham. Hardingham granted
REMA an exclusive licence to
the copyright subsisting in works
originated by him.

Real estate agents commissioned
REMA over the phone to provide
photos and floor plans for use in
marketing campaigns for the sale
or lease of properties. The agents
then uploaded the photos and floor
plans to the website operated by
Realestate.com.au Pty Ltd (REA)
for this purpose. The informal
agreement between the parties was
only ever an oral agreement and was
never reduced to writing.

In order to upload the photos and
floor plan to realestate.com.au, the
agents agreed to the terms and
conditions of REA. These included
the grant to REA of an express,
royalty-free licence to “ licence to
other persons” any content provided
by the agents. Pursuant to this, REA
provided the appellants’ photos and
floorplans to RP Data. RP Data then
published the photos and floorplans
on its website corelogic.com.au.

The appellants claimed that, in
so doing, RP Data infringed Mr
Hardingham’s copyright.

A majority of the Full Court upheld
the appeal. Greenwood J found,
and Rares J agreed, that the parties
made an informal, oral arrangement
which expressly granted the
agencies permission – or a licence –
to use the works for the purposes of
the marketing campaign for the sale
or lease of the property. That licence
included an authority conferred on
the agents to sub-license others
(including REA) to use the works
for the purposes of the marketing
campaign. However, their Honours
found this did not include a grant
of authority to the agents to
sub-license REA on REA’s usual
terms and conditions.

The decision is
a useful reminder
of the importance
of clearly defining
and documenting
the scope of any
licences granted.

First instance decision
The appellants were unsuccessful
at first instance in their copyright
infringement claim. Thawley J found
that the appellants authorised the
agents to upload the photos and
floor plans to realestate.com.au, and
granted to REA a licence in the form
contained in REA’s usual terms and
conditions. This much was to be
inferred from the parties’ conduct,
or alternatively should be implied
into their agreements to give them
business efficacy.

Key to this finding was that the
appellants were aware that the
agents were going to upload the
photos and floor plans to realestate.

com.au, and that REA was going to
share this content with RP Data.

In reaching this finding, their
Honours applied foundational
principles from Codelfa Construction
v State Rail Authority of NSW 3
(Codelfa) and B. P. Refinery v Shire
of Hastings 4 (B. P. Refinery) to
determine whether a term is to
be inferred or implied into an oral
contract. Citing Codelfa, their Honours noted
that an implied term is one that
it is “presumed that the parties
would have agreed upon had they
turned their minds to it — it is not a
term that they have actually agreed
upon”. Their Honours considered
that a term conferring authority on
the agencies as per the REA terms
and conditions would have been
significantly against the appellants’
interest. It was, therefore, difficult
to conclude that the parties would
have agreed to such a term, had
they turned their minds to it.

Further, in applying the criteria
in B. P. Refinery, their Honours
considered that the scope of such
a term would not be “so obvious
that it would go without saying”.

In the circumstances, their Honours
were not satisfied that the principles
governing the inclusion of an implied
or inferred term had been met.

Licensing Lessons
The decision is a useful reminder
of the importance of clearly defining
and documenting the scope of any
licences granted. This includes the
extent to which the licensee may
grant sub-licenses, under a written
agreement. Photographers and other creatives
would be wise to include in their
standard terms and conditions,
a term dealing with copyright
ownership and the rights that
they licence to the customer.

It is preferable to have a written
agreement, rather than relying
on oral agreements or implied
terms. Whilst it may be that these
standard terms don’t suit everyone,
it provides a starting point for
the parties to negotiate terms
that work for both of them.

Any departures from the standard
terms and conditions could then
be agreed in writing.

9 Alexis Keating | Associate
3 4
Codelfa Construction Pty Ltd v State Rail Authority of NSW (1982) 149 CLR 337
B. P. Refinery (Westernport) Pty Ltd v Shire of Hastings (1977) 180 CLR 266
Inspire December 2021
Background LLB (Hons), BSc
alexis.keating@pof.com.au